Expert testimony [may be] required not only to explain what the prior art references disclosed, but also to show that a person skilled in the art would have been motivated to combine them in order to achieve the claimed...more
On May 1, 2013, in Allergan, Inc. v. Sandoz Inc., the U.S. Court of Appeals for the Federal Circuit (Dyk, Prost,* O'Malley) affirmed-in-part and reversed-in-part the district court's judgment that U.S. Patents No. 7,642,258,...more
On March 7, 2013, in In re Hubbell, the U.S. Court of Appeals for the Federal Circuit (Newman, O'Malley* Wallach) affirmed the USPTO Board of Patent Appeals and Interferences decision upholding the patent examiner's rejection...more
[T]he preamble constitutes a limitation when the claim(s) depend on it for antecedent basis, or when it "is essential to understand limitations or terms in the claim body."
On December 27, 2012, in C.W. Zumbiel Co. v....more
"The law does not require that no competent attorney or alert inventor could have avoided the error sought to be corrected by reissue."
On December 14, 2012, in In re Rosuvastatin Calcium Patent Litig., the U.S. Court of...more
[T]he commercial success of the embodiment with additional unclaimed features is to be considered when evaluating the obviousness of the claim, provided that embodiment's success has a sufficient nexus to the claimed and...more